Diesel S.p.A.v.Speedway Motors, Inc.

Trademark Trial and Appeal Board

May 19, 2017

No. 91221181 (T.T.A.B. May. 19, 2017)

Mailed: May 19, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Diesel S.p.A.

v.

Speedway Motors, Inc.
_____

Opposition No. 91221181

_____

Robert S. Pierce of Jacobson Holman PLLC
for Diesel S.p.A.

Jeremy N. Gayed of Barrett & McNagny LLP
for Speedway Motors, Inc.
______

Before Mermelstein, Lykos and Pologeorgis,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:

Speedway Motors, Inc. (“Applicant”) has applied to register the mark
DIESELTRUX.COM in standard characters on the Principal Register for
“Clothing and apparel, namely, t-shirts and other casual apparel, namely,
shorts, pants, t-shirts, sweatshirts, polo shirts, and hooded sweatshirts” in
International Class 25 and “Internet and electronic retail store services for
THIS OPINION
IS NOT A PRECEDENT
OF THE TTAB
Opposition Nos. 91221181

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apparel, namely, t-shirts and other casual apparel, namely, shorts, pants, t-
shirts, sweatshirts, polo shirts, and hooded sweatshirts” in International Class
35.1
Diesel S.p.A. (“Opposer”) opposed the registration of Applicant’s mark on
the ground of likelihood of confusion under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), as well as on the ground of dilution by blurring under
Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c), based on Opposer’s
previously used, registered and allegedly famous DIESEL and DIESEL-
formative marks. Opposer pleaded ownership of and submitted with its notice
of opposition copies of its pleaded registrations obtained from the U.S. Patent
and Trademark Office’s (“USPTO”) Trademark Status and Document Retrieval
(“TSDR”) database (thereby making them of record pursuant to Trademark
Rule 2.122(d)(1)), which are identified below:2
Registration No. 1498698 for the mark DIESEL in typed format3
on the Principal Register for “men’s & women’s apparel namely
jeans, shirts, jackets and sweatshirts” in International Class 25;
registered August 2, 1988; Section 8 and 15 affidavits accepted and
acknowledged.

1 Application Serial No. 85511631, filed January 9, 2012, based on an allegation of use
in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), claiming
June 1, 2007 as both the date of first use and date of first use in commerce for the goods
identified International Class 25 and December 13, 2004 as both the date of first use
and the date of first use in commerce for the services identified International Class 35.
2 As noted infra, Opposer also made its pleaded registrations of record under a notice
of reliance.
3 Prior to November 2, 2003, “standard character” drawings were known as “typed”
drawings. A typed mark is the legal equivalent of a standard character mark. Trade-
mark Manual of Examining Procedure (“TMEP”) § 807.03(i) (April 2017).
Opposition Nos. 91221181

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Registration No. 1564710 for the mark DIESEL in typed format on
the Principal Register for “trousers, pants, jeans, shorts, skirts,
overcoats, raincoats, jackets, windresistant jackets, cabans,
blazers, sweaters, jerseys, vests, cardigans, shirts, t-shirts,
blouses, dresses, suits, tracksuits, sweatshirts, pullover, overalls”
in International Class 25; registered November 7, 1989; Sections 8
and 15 affidavits accepted and acknowledged.

Registration No. 1605656 for the mark the mark
on the Principal Register for “trousers, pants,
jeans, shorts, skirts, overcoats, raincoats, jackets, windresistant
jackets, cabans, blazers, sweaters, jerseys, vests, cardigans, shirts,
t-shirts, blouses, dresses, suits, tracksuits, sweatshirts, pullovers,
overalls” in International Class 25; registered July 10, 1990;
Sections 8 and 15 affidavits accepted and acknowledged.

Registration No. 1939141 for the mark the mark
on the Principal Register for, among other
things, “footwear; namely, shoes, boots and slippers, belts” in
International Class 25; registered December 5, 1995; Sections 8
and 15 affidavits accepted and acknowledged; renewed.

Registration No. 1989390 for the mark DIESEL in typed format on
the Principal Register for, among other things, “footwear; namely,
shoes, boots and slippers, belts” in International Class 25;
registered July 30, 1996; Sections 8 and 15 affidavits accepted and
acknowledged; renewed.

Registration No. 3956724 for the mark DIESEL BLACK GOLD in
standard characters on the Principal Register for, among other
things, “Clothing, namely, coats, mantles, raincoats, dresses, suits,
skirts, jackets, trousers, jeans, waistcoats, shirts, T-shirts, blouses,
jerseys, sweaters, pullovers, blazers, cardigans, stockings, socks,
tights, underwear, corsets, nightgowns, wedding gowns, women’s
suits, pajamas, Bermuda shorts, bathrobes, bathing suits,
swimming suits, sun suits, sport jackets, wind-resistant jackets,
anoraks for exercises, anoraks not for exercises, sweatsuits, ties,
neckties, scarves, shawls, foulards, hosiery, gloves, sashes, belts,
Opposition Nos. 91221181

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footwear, boots, shoes, slippers; clothing for children, namely,
coats, mantles, raincoats, dresses, suits, skirts, jackets, trousers,
jeans, waistcoats, shirts, T-shirts, blouses, jerseys, sweaters,
pullovers, blazers, cardigans, stockings, socks, tights, underwear,
pajamas, Bermuda shorts, bathrobes, bathing suits, swimming
suits, sun suits, scarves, hosiery, gloves, belts; clothing for
neonates, namely, one-piece play suits, cloth bibs, baby bottoms,
baby sleepers, baby diaper covers, baby bodysuits, baby tops, baby
trousers, creepers, nightgowns, pajamas, sweatsuits; leather
clothing, namely, leather jackets, leather pants, leather overcoats,
leather coats, leather suits, leather skirts” in International Class
25; registered May 10, 2011.

Registration No. 4268431 for the mark DIESEL in standard
characters on the Principal Register for, among other things,
“retail department store services and on-line retail store services
featuring clothing, textile fabrics, footwear, headgear, perfumery
and cosmetics, spectacles, carpets and floor coverings, tiles,
glassware, porcelain, housewares, crockery, linen, wall paper,
furniture, lighting fixtures, helmets with the exception of helmets
for baseball, lacrosse, softball and American football, musical
instruments, stationery and printed matter, leather articles,
jewelry and watches, and books and journals” in International
Class 25; registered January 1, 2013.

In its answer to the notice of opposition, Applicant denied most of the salient
allegations.4 Applicant, however, did admit the following: (1) “that the notice of
opposition enclosed an Exhibit A purporting to show printouts of registration
certificates and other documents,” (2) that Opposer, “either itself or through
third parties, has sold goods to the public,” (3) that Applicant “filed an
application to register the mark DIESELTRUX.COM in standard characters”
that “was accorded Serial No. 85511634 and was published for opposition on
September 23, 2014, based on actual use in commerce on or in connection with

4 6 TTABVUE.
Opposition Nos. 91221181

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goods identified as ‘Clothing and apparel, namely, t-shirts and other casual
apparel, namely, shorts, pants, t-shirts, sweatshirts, polo shirts, and hooded
sweatshirts,’” and (4) that Opposer filed a timely initial ninety-day extension of
time to oppose Applicant’s involved application and thereafter an additional
sixty-day extension of time to oppose, both of which were granted by the Board.5
Additionally, Applicant asserted seven affirmative defenses.6 We construe
Applicant’s Affirmative Defense Nos. 2-5 and 7 as mere amplifications of the
denials in its answer. See Order of Songs of Italy in America v. Profumi Fratelli
Nostra AG, 36 USPQ2d 1221, 1223 (TTAB 1995). Applicant also asserted the
defense that the opposition was untimely filed (Affirmative Defense No. 1), and
a defense that Applicant’s applied-for mark will not cause confusion with
Opposer’s pleaded marks if the identification of goods and services are modified.
(Affirmative Defense No. 6). Applicant, however, did not move to amend its
application to restrict the identifications prior to trial with Board approval nor
did it seek such a restriction in its final brief. Similarly, Applicant did not argue
that the opposition was untimely filed in its trial brief.7 These affirmative
defenses are therefore waived. See, e.g., Daniel J. Quirk, Inc. v. Vill. Car Co.,

5 6 TTABVUE 3-5.
6 6 TTABVUE 7-8.
7 In any event, any argument that the notice of opposition was untimely is meritless.
The record shows that Opposer was allowed until March 22, 2015 in which to file a
notice of opposition. Opposer filed its notice of opposition on March 23, 2015. Because
March 22, 2015 fell on a Sunday, Opposer was allowed until the next business day in
which to file timely its opposition. See Trademark Rule 2.196; TBMP § 209.02 (Jan.
2017).
Opposition Nos. 91221181

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120 USPQ2d 1146, 1147 n.4 (TTAB 2016) (affirmative defenses not pursued
through the presentation of evidence or in brief deemed waived).
I. The Record
The record includes the pleadings and, pursuant to Trademark Rule
2.122(b), Applicant’s application file, and as noted above, Opposer’s pleaded
registrations. Opposer did not take any testimony in this proceeding. Rather,
Opposer submitted via notice of reliance the following:
Opposer’s Notice of Reliance (“NOR”) No. 1 consisting of printouts
downloaded from Opposer’s website that include the home page;
company history; United States store locations; information about
ordering online; and goods sold under the DIESEL BLACK GOLD mark
and the DIESEL mark;8

Opposer’s NOR No. 2 consisting of Applicant’s responses to Opposer’s
written discovery;9

Opposer’s NOR No. 3 consisting of printouts downloaded from
Applicant’s websites www.diesltrux.com and www.speedwaymotors.
net;10

Opposer’s NOR Nos. 4-10 consisting of copies of the file histories of
Opposer’s pleaded registrations.11

Opposer’s NOR Nos. 11-29 consisting of clippings from newspapers and
magazines between 2010 and 2015 referring to Opposer’s pleaded
DIESEL or DIESEL BLACK GOLD marks;12

8 12 TTABVUE.
9 13 TTABUVE.
10 14 TTABVUE.
11 15-21 TTABVUE.
12 23-41 TTABVUE.
Opposition Nos. 91221181

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Opposer’s NOR No. 30 consisting of an unauthenticated document
purporting to display spreadsheets showing Opposer’s media campaigns
for 2010-2015;13

Opposer’s NOR No. 31 consisting of a copy of an unauthenticated
document purporting to display Opposer’s sales and advertising figures
in the United States from March 2010 until February 2015;14

Opposer’s NOR No. 32 consisting of the TTAB record for Opposition No.
91191235, Diesel S.p.A. v. Passaro;15 and

Opposer’s NOR No. 33 consisting of the status and tile copy of
Registration No. 3751990 for the mark DASH & DIESEL for “children
and baby clothing, namely, hats, t-shirts, infant and toddler one piece
clothing, jackets.”16

Likewise, Applicant did not take any testimony in this case. Instead,
Applicant submitted, via notice of reliance, the following:
Applicant’s NOR No. 1 consisting of Opposer’s responses and
supplementary responses to Applicant’s written discovery;17

Applicant’s NOR No. 2 consisting of Applicant’s complete responses to
Opposer’s written discovery;18

Applicant’s NOR Nos. 3-7 consisting of status and title copies of
Registration Nos. 2986581, 3264712, 3751990, 4038866, and 4513915,
for the marks (1) DIESEL DICK IT LOOK’S LIKE WE’RE BOTH OVER
WEIGHT THE RULE OF THE ROAD #110 “STATE THE OBVIOUS,”
(2) COCKDIESEL, (3) DASH & DIESEL, (4) PROTECT YOUR DIESEL
RIGHTS, and (5) DIESEL LIFE, respectively.19

13 42 TTABVUE.
14 43 TTABVUE.
15 51 TTABVUE.
16 52 TTABVUE.
17 44 TTABVUE.
18 45 TTABVUE.
19 46-50 TTABVUE.
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II. Evidentiary Issues

We initially address certain issues concerning the evidence submitted by
both parties. As noted above, neither Opposer nor Applicant submitted any
testimony during its assigned testimony period. Under its NOR Nos. 30 and 31
Opposer submitted unauthenticated documents purporting to display
Opposer’s advertising and sales, as well as its media campaigns, for its pleaded
DIESEL and DIESEL BLACK AND GOLD marks for the years 2010-2015.
Without any testimony to authenticate these filings, these documents cannot
be submitted under a notice of reliance alone. See Trademark Rule 2.122(e), 37
C.F.R. § 2.122(e). Where parties improperly introduce or submit non-
conforming evidence, such evidence “will not be considered even if the adverse
party does not specifically object to it, as long as the adverse party does not
specifically treat it as of record such that we can say it has been stipulated into
the record.” Calypso Technology, Inc. v. Calypso Capital Management, LP, 100
USPQ2d 1213, 1216 (TTAB 2011). In this case, Applicant did not object to
Opposer’s sales and advertising evidence and, in fact, discussed this evidence
in its final brief on the case.20 As such, we deem this particular evidence to have
been stipulated into the record. See Orange Bang, Inc. v. Ole Mexican Foods,
Inc., 116 USPQ2d 1102, 1108 n.14 (TTAB 2015) (because non-offering party
treated sales history reports as being of record, Board construed exhibit as
having been stipulated into the record by the parties). In view thereof, we have

20 Applicant’s Brief, pp. 16-17; 54 TTABVUE 22-23.
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considered the evidence purporting to show Opposer’s advertising and sales
figures for its pleaded DIESEL and DIESEL BLACK AND GOLD marks in our
analysis herein. We have not, however, considered Opposer’s unauthenticated
document regarding its purported media campaigns inasmuch as this document
has not been properly introduced into the evidentiary record and Applicant has
not treated this evidence as part of the record, notwithstanding the fact that
Applicant did not expressly object to this evidence.
We also note that Opposer, by way of a notice of reliance, submitted
printouts from its own website, as well as Applicant’s websites, downloaded
from the Internet.21 Although admissible for what they show on their face, see
Trademark Rule 2.122(e)(2), this evidence also constitutes hearsay and may not
be relied upon for the truth of the matters asserted therein. Safer, Inc. v. OMS
Investments, Inc., 94 USPQ2d 1031 (TTAB 2010); Trademark Trial and Appeal
Board Manual of Procedure (“TBMP”) § 704.08 (“Even if properly made of
record, however … Internet printouts [] would only be probative of what they
show on their face, not for the truth of the matters contained therein, unless a
competent witness has testified to the truth of such matters.”). However, to the
extent that Applicant has acknowledged as fact any portion of this Internet
evidence, we deem such portions of Opposer’s Internet evidence stipulated into
the record for the truth of any matters asserted therein.

21 12 and 14 TTABVUE.
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Finally, we note that Applicant submitted its own responses to Opposer’s
written discovery under its NOR No. 2. A party may not make its own discovery
responses of record except to the extent necessary to make not misleading the
discovery responses submitted by the inquiring party. Trademark Rule
2.120(k)(5). Here, Applicant submitted all of its responses to Opposer’s written
discovery without the required showing of the need to doing so to avoid any
misleading submission by Opposer of its discovery responses. Id. Accordingly,
Applicant’s submission of its own responses to Opposer’s discovery requests was
improper under Board rules. We further note, however, that Opposer also
submitted Applicant’s responses to Opposer’s written discovery through its own
notice of reliance. To this extent only, they are of record. Trademark Rule
2.120(k).
III. Standing
Standing is a threshold issue that must be proven by the plaintiff in every
inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d
1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401
(2015). Our primary reviewing court, the U.S. Court of Appeals for the Federal
Circuit, has enunciated a liberal threshold for determining standing, namely
that a plaintiff must demonstrate that it possesses a “real interest” in a
proceeding beyond that of a mere intermeddler, and “a reasonable basis for his
belief of damage.” Empresa Cubana Del Tabaco 111 USPQ2d at 1062 (citing
Ritchie v. Simpson, 170 F.3d 1902, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999)).
Opposition Nos. 91221181

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A “real interest” is a “direct and personal stake” in the outcome of the
proceeding. Ritchie v. Simpson, 50 USPQ2d at 1026.
Opposer has demonstrated through the USPTO database printouts made
of record that it is the owner of its pleaded registrations and that the
registrations are valid and subsisting. Because Opposer’s registrations are of
record, Opposer has established its standing. See Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Ind., Inc.
v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
IV. Section 2(d) Claim
We will now consider Opposer’s Section 2(d) claim, focusing on Opposer’s
registered mark DIESEL for the goods and services identified in Registration
Nos. 1564710 and 4268431 pleaded and made of record. In our view, these two
registrations, coupled with their corresponding identified goods and services,
are most likely to support a likelihood of confusion claim. If Opposer could
prevail on its Section 2(d) claim on these registrations, then consideration of
others would be unnecessary; and if Opposer could not, then consideration of
other less relevant registrations would not assist Opposer. See, e.g., In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. Priority
Priority is not at issue in view of Opposer’s ownership of the valid and
subsisting registrations noted above for the goods and services identified
therein. See King Candy, Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
Opposition Nos. 91221181

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USPQ 108 (CCPA 1974).
B. Likelihood of Confusion
We base our determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)
(“du Pont”). See also, In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). “Not all of the DuPont factors are relevant to every
case, and only factors of significance to the particular mark need be considered.”
In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010).
For example, the Board can “focus … on dispositive factors, such as similarity
of the marks and relatedness of the goods.” Herbko Int’l, Inc. v. Kappa Books,
Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (quoting Han
Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1559 (Fed.
Cir. 2001)). The fame of the prior mark can also be critical. Bose Corp. v. QSC
Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002).
These factors, and the other relevant du Pont factors are discussed below.
The Goods and Services, Trade Channels and Classes of Purchasers
We first address the du Pont likelihood of confusion factor focusing on the
comparison of the goods and services identified in Applicant’s application vis-à-
vis the goods and services identified in Opposer’s pleaded Registration Nos.
1564710 and 4268431. See Stone Lion Capital Partners, LP v. Lion Capital LLP,
746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Systems, Inc.
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v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261,
62 USPQ2d 1001 (Fed. Cir. 2002).
At the outset, we note that the involved application and Opposer’s pleaded
registrations noted above include goods and services that are identical, at least
in part. Applicant’s Application Serial No. 85511631 and Opposer’s
Registration No. 1564710 both include shorts, pants, T-shirts and sweatshirts.
Likewise, Applicant’s Application Serial No. 85511631 and Opposer’s
Registration No. 4268431 both include online retail clothing stores services that
feature, in part, identical clothing items. Given that the goods and services are
identical in part, this du Pont factor weighs in favor of finding a likelihood of
confusion.
Because the goods and services are legally identical in part, and since
neither Opposer’s registrations nor the involved application contain any
limitations on the channels of trade and classes of purchasers, we must
presume that the channels of trade and classes of purchasers are the same for
these identical goods and services. See Stone Lion, 110 USPQ2d at 1161; In re
Yawata Iron & Steel Co., Ltd., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968)
(where there are legally identical goods, the channels of trade and classes of
purchasers are considered to be the same); American Lebanese Syrian
Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022,
1028 (TTAB 2011). See also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,
Opposition Nos. 91221181

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1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels
of trade and classes of consumers, the Board was entitled to rely on this legal
presumption in determining likelihood of confusion). For this reason,
Applicant’s argument that Opposer did not submit any evidence to establish
that the parties’ respective goods and services are identical or similar22 is
unpersuasive. As such, the du Pont factor regarding the similarity or
dissimilarity of established, likely to continue trade channels and class of
purchasers also favors a finding of likelihood of confusion.
The Marks
Keeping in mind that where the goods and services are identical or identical
in part, as is the case here, the degree of similarity between the marks
necessary to support a determination that confusion is likely declines, see
Bridgestone Americas Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 102
USPQ2d 1061, 1064 (Fed. Cir. 2012), we now consider the first du Pont
likelihood of confusion factor, which involves an analysis of the similarity or
dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. See Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689,
1691 (Fed Cir. 2005) (quoting du Pont, 177 USPQ at 567). “The proper test is
not a side-by-side comparison of the marks, but instead ‘whether the marks are
sufficiently similar in terms of their commercial impression’ such that persons

22 54 TTABVUE 21-22.
Opposition Nos. 91221181

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who encounter the marks would be likely to assume a connection between the
parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012) (internal citation omitted). The focus is on
the recollection of the average purchaser, who normally retains a general rather
than a specific impression of trademarks. In re Binion, 93 USPQ2d 1531, 1534
(TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB
1975). Our analysis cannot be predicated on dissection of the involved marks.
Stone Lion, 110 USPQ2d at 1161. Rather, we are obliged to consider the marks
in their entireties. Id. See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not
be dissected and considered piecemeal; rather, it must be considered as a whole
in determining likelihood of confusion.”). Nonetheless, there is nothing
improper in stating that, for rational reasons, more or less weight has been
given to a particular feature of a mark, provided the ultimate conclusion rests
on a consideration of the marks in their entireties. Stone Lion, 110 USPQ2d at
1161.
We now turn to our comparison of the DIESEL mark, the subject of
Opposer’s pleaded Registration Nos. 1564710 and 4268431, and Applicant’s
DIESELTRUX.COM mark. We first note that Applicant has incorporated the
entirety of Opposer’s mark. While “[t]here is no explicit rule that likelihood of
confusion automatically applies where a junior user’s mark contains in part the
whole of another mark,” the fact that Opposer’s pleaded DIESEL mark is
Opposition Nos. 91221181

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subsumed by Applicant’s mark increases the similarity between the two. See,
e.g., In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009)
(applicant’s mark VANTAGE TITAN for medical magnetic resonance imaging
diagnostic apparatus similar to TITAN for medical ultrasound diagnostic
apparatus); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988)
(applicant’s mark MACHO COMBOS for food items found similar to MACHO
for restaurant entrees); In re Riddle, 225 USPQ 630, 632 (TTAB 1985)
(RICHARD PETTY’S ACCU TUNE for automotive service centers similar to
ACCU-TUNE for automotive testing equipment).
Moreover, the shared term DIESEL appears first in Applicant’s mark.
Consumers are generally more inclined to focus on the first word, prefix, or
syllable in any trademark or service mark. See Palm Bay Imps., Inc., 73
USPQ2d at 1692 (Fed. Cir. 2005) (“VEUVE . . . remains a ‘prominent feature’
as the first word in the mark and the first word to appear on the label”).
Further, even if consumers attribute significance to the additional wording
“TRUX.COM” in Applicant’s mark, they could still reasonably assume, due to
the overall similarities between the respective marks and the relatedness of the
goods and services, that Applicant’s goods and services provided under the
“DIESELTRUX.COM” mark constitute a new or additional product line from
the same source as the goods sold under Opposer’s pleaded DIESEL mark with
which they are acquainted or familiar, and that Applicant’s
“DIESELTRUX.COM” mark is merely a variation of Opposer’s DIESEL mark.
Opposition Nos. 91221181

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See, e.g., SMS, Inc. v. Byn-Mar Inc. 228 USPQ 219, 220 (TTAB 1985)
(applicant’s marks ALSO ANDREA and ANDREA SPORT were “likely to evoke
an association by consumers with opposer’s preexisting mark [ANDREA
SIMONE] for its established line of clothing.”).
Furthermore, while the additional terms “TRUX” and “.COM” in Applicant’s
mark cannot be ignored, these added terms are insufficient to distinguish the
marks. First, the upper level domain designation “.COM” in Applicant’s mark
has no source indicating significance inasmuch as said term would be regarded
as indicating a commercial website by actual and potential consumers of
Applicant’s identified goods and services and, therefore, is entitled to little
weight in our analysis regarding the similarity of the marks at issue. See In re
Martin Container Inc., 65 USPQ2d 1058 (TTAB 2002); In re CyberFinancial.Net
Inc., 65 USPQ2d 1789 (TTAB 2002); and In re Page, 51 USPQ2d 1660 (TTAB
1999). See also TMEP §§ 1209.03(m) and 1215.04 (April 2017). Second, Opposer
has requested that the Board take judicial notice of the definition of the term
“diesel” which is defined as “(1) diesel engine; (2) a vehicle driven by a diesel
engine; or (3) diesel fuel.”23 We grant Opposer’s request and have considered
the definition of the term “diesel” in our analysis herein.24 In light of this
definition, Opposer’s DIESEL mark and the “DIESELTRUX”25 portion of

23 Opposer’s Brief, p. 20, 53 TTABVUE 21.
24 The Board may take judicial notice of dictionary definitions. Univ. of Notre Dame du
Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1371,
217 USPQ 505 (Fed. Cir. 1983).
25 We recognize that TRUX is the phonetic equivalent of the term “trucks.”
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Applicant’s mark have the same connotation and commercial impression, i.e., a
vehicle driven by a diesel engine.
In view of the foregoing, we find that, taken in their entireties, the
similarities between Opposer’s DIESEL mark and Applicant’s
DIESELTRUX.COM mark outweigh any differences for likelihood of confusion
purposes. The first du Pont factor thus supports a finding that confusion is
likely.
Fame of the Prior Mark
We next turn to the alleged fame of Opposer’s DIESEL mark. Fame of the
prior mark, if it exists, plays a dominant role in balancing the likelihood of
confusion factors. Bose Corp., 63 USPQ2d at 1305. Fame for likelihood of
confusion purposes arises as long as a “significant portion of the relevant
consuming public ... recognizes the mark as a source indicator.” See Palm Bay
Imps. Inc., 73 USPQ2d at 1694. Such fame may be measured indirectly by the
volume of sales and advertising expenditures of the goods sold under the mark,
for example, and other factors such as length of time of use of the mark;
widespread critical assessments; notice by independent sources of the products
identified by the marks; and the general reputation of the products and
services. Bose Corp., 63 USPQ2d at 1308; Blue Man Productions Inc. v.
Tarmann, 75 USPQ2d 1811, 1817 (TTAB 2005). This information, however,
must be placed in context (e.g., a comparison of advertising figures with
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competitive products, market share, reputation of the product, etc.). Bose Corp.,
63 USPQ2d at 1308.
The evidence of record shows (1) Opposer’s annual sales of goods sold under
all of its pleaded marks is approximately between $150,000,000 and
$220,000,000 in the United States between 2010 and 2015;26 (2) Opposer’s
advertising and promotion budget for all of its pleaded marks during the same
period was approximately between $6,000,000 and $9,000,000;27 (3) Opposer’s
clothing items are sold under its DIESEL mark through a nationwide chain of
DIESEL stores and online at www.diesel.com, as well through such retailers as
Macy’s, Bloomingdale, Nordstrom, Niemen-Marcus and Saks Fifth Avenue;28
(4) fashion editorials and advertisements published between the years 2010-
2015 displaying Opposer’s clothing under its DIESEL mark featured in
nationally-circulated publications such as Details, GQ, Interview, New York
Times, Cosmopolitan, W, US Weekly, Elle and Esquire,29 and (6) some, albeit
minimal, unsolicited publicity and media attention.30

26 43 TTABVUE 4.
27 43 TTABVUE 5.
28 44 TTABVUE 6-7.
29 23-41 TTABVUE.
30 Id. We also note that Opposer relies on its pleaded registrations for the mark
DIESEL to establish that it has been using its DIESEL mark on clothing since 1979
and on its retail store services featuring clothing since 1996. See Opposer’s Brief, p. 23,
53 TTABUVE 24. However, dates of use recited in registrations are not evidence of
actual use dates, which is a matter for proof. Trademark Rule 2.122(b)(2). Accordingly,
we cannot consider Opposer’s registrations of record for the DIESEL mark as
evidentiary proof of the length of time Opposer has used its DIESEL mark on clothing
or retail store services featuring clothing. Moreover, although Opposer has submitted
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While this evidence supports a finding of significant renown attributable to
Opposer’s pleaded marks, it does not suffice for purposes of proving that
Opposer’s DIESEL mark is famous under the fifth du Pont factor. Indeed,
noticeably absent from the record is the amount of sales and advertising for
Opposer’s DIESEL mark alone. In other words, Opposer has not presented
evidence directed to any of its pleaded marks individually for clothing alone.
Additionally, Opposer has failed to submit any evidence of how its sales and
advertising figures are comparable to its competitors in the industry. Without
these numbers and those of competitors, it is difficult to place any apparent
success or renown of Opposer’s DIESEL mark into context. Bose Corp., 63
USPQ2d at 1309. In other words, it is impossible to ascertain from this record
the extent to which consumers have been exposed to Opposer’s goods under its
DIESEL mark vis-à-vis its competitors, and, thus, whether Opposer’s evidence
of sales, advertising and media exposure translates into fame of its pleaded
DIESEL mark. Ultimately, Opposer’s evidence falls short of establishing that
the DIESEL mark is famous. See Leading Jewelers Guild Inc., 82 USPQ2d at
1904.
In view of the extreme deference that is accorded to a famous mark in terms
of the wide latitude of legal protection it receives, and the dominant role fame

pages from its website www.diesel.com which states that the company was created in
1976, see 12 TTABUVE 11, we cannot consider the website pages for the truth of the
matters asserted therein, and Applicant has not treated this information as of record.
See Safer, Inc., 94 USPQ2d at 1040.
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plays in the likelihood of confusion analysis, we think that it is the duty of a
plaintiff asserting that its mark is famous to clearly prove it.” Blue Man
Productions Inc., 75 USPQ2d at 1819. Although Opposer has shown that its
mark has achieved a significant degree of recognition, the evidence is
insufficient to support a finding that the mark is famous. The evidence,
however, does show that Opposer’s DIESEL mark is a strong mark for clothing.
That is, Opposer’s DIESEL mark has achieved a significant level of recognition
as demonstrated by the numerous fashion editorials and advertisements
submitted by Opposer, as well as the fact that Opposer provides its DIESEL
clothing throughout the United States. Moreover, Opposer’s mark is
intrinsically strong inasmuch as it is an arbitrary term in the context of the
parties’ identified goods.
The determination of the strength or fame of a mark is not a binary analysis,
but rather is the examination of a continuum from the weakest to the most
famous. Based on the totality of the evidence submitted by Opposer which the
Board may consider, we find that, while Opposer has not established that its
DIESEL mark is famous, for purposes of the likelihood of confusion analysis,
when used in association with the goods and services identified in its pleaded
Registration Nos. 1564710 and 4268431, it appears that the goods and services
offered under Opposer’s pleaded DIESEL mark has achieved commercial
success and a high degree of renown. The fifth du Pont factor therefore favors
a finding of likelihood of confusion.
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Actual Confusion and Contemporaneous Use
We next turn to the seventh du Pont factor (nature and extent of any actual
confusion) and the related eighth du Pont factor (extent of the opportunity for
actual confusion).
Applicant argues that, despite the twelve years of concurrent use of
Applicant’s DIESELTRUX.COM mark and Opposer’s DIESEL mark, there is
no evidence of a single instance of actual confusion.31
While we have considered that there is no evidence of actual confusion, we
are also aware that in most cases, “the lack of any occurrences of actual
confusion is not dispositive inasmuch as evidence thereof is notoriously difficult
to come by.” Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB
1992). The Federal Circuit has noted that: “Before this court, the test is
likelihood of confusion not actual confusion. It is unnecessary to show actual
confusion in establishing likelihood of confusion.” Weiss Associates Inc. v. HRL
Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990)
(Citations omitted). Therefore, while we find that the seventh du Pont factor
favors Applicant, we do not find that it strongly supports Applicant’s position.
Moreover, the absence of any reported instances of confusion is meaningful
only if the record supports appreciable and continuous use by Applicant of its
marks for a significant period of time in the same markets as those served by
Opposer under its DIESEL mark. In other words, for the absence of actual

31 Applicant’s Brief, p. 18, 54 TTABVUE 24.
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confusion to be probative, there must have been a reasonable opportunity for
confusion to have occurred. Citigroup Inc. v. Capital City Bank Group Inc., 94
USPQ2d 1645, 1660 (TTAB 2010), aff’d Citigroup Inc. v. Capital City Bank
Group Inc., 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Barbara’s Bakery
Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007) (the probative value of
the absence of actual confusion depends upon there being a significant
opportunity for actual confusion to have occurred).
While there is no evidence of any instances of actual confusion, a fact which
weighs in Applicant’s favor under the seventh du Pont factor, we nonetheless
find that weight to be counterbalanced and essentially negated by the lack of
any evidence of record pertaining to the eighth du Pont factor, i.e., “the length
of time during and conditions under which there has been concurrent use
without evidence of actual confusion.” Specifically, there is no evidence of record
to demonstrate the extent of Applicant’s sales or advertising under its
DIESELTRUX.COM mark in the same markets and during the years where the
parties’ respective marks were allegedly concurrently used. In light of the lack
of this evidence, we cannot conclude, on this record, that that the absence of
instances of actual confusion between Applicant’s DIESELTRUX.COM mark
and Opposer’s DIESEL mark is legally significant. See Gillette Canada Inc., 23
USPQ2d at 1774. Accordingly, the seventh and eighth du Pont factors, relating
to actual confusion, are neutral in this case or, at best, weigh only minimally in
Applicant’s favor.
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Extent of Potential Confusion
Last, we consider the extent of potential confusion, i.e., whether de minimis
or substantial. With regard to this factor, Applicant argues that Opposer’s
failure to submit any evidence of actual confusion and in light of the undisputed
long period of concurrent use of Applicant’s DIESELTRUX.COM mark and
Opposer’s DIESEL mark suggests that even if some confusion were to occur in
the future, it would be de minimis in nature.32 We disagree. In view of the legally
identical goods, the similarity of the marks, the commercial strength of
Opposer’s DIESEL mark, and the identical trade channels and class of
purchasers, likely confusion is not de minimis. Accordingly, this du Pont factor
is neutral, at best.
Remaining du Pont Factors
Applicant argues that Opposer has failed to prove its claim of likelihood of
confusion because Opposer has not addressed any of the remaining du Pont
factors. Applicant, however, has also failed to put forward any evidence or
argument regarding any of the remaining factors. Parties to a Board proceeding
are not required to address every du Pont factor. If Applicant believed that
other du Pont factors suggest that confusion is not likely, it was incumbent on
Applicant bring forward any relevant evidence or argument. Likewise, the
Board need not consider factors that are not of record before the Board. See M2

32 Applicant’s Brief, p. 18; 54 TTABVUE 24.
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Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947
(Fed. Cir. 2006).
Balancing the du Pont Factors
Based on all evidence and arguments bearing on the du Pont factors that
the Board may consider, including the evidence and arguments that we have
not specifically discussed herein, we conclude that although Opposer has failed
to establish that its pleaded DIESEL mark is famous for likelihood of confusion
purposes, the record nonetheless demonstrates that Opposer’s DIESEL mark
is commercially strong for clothing. Moreover, the goods and services involved
are identical in part and are therefore presumed to travel through the same
trade channels and be purchased by the same classes of consumers, ordinary
consumers. When considered in their entireties, the marks DIESEL and
DIESELTRUX.COM are similar in appearance, sound, meaning and
commercial impression. The remaining du Pont factors discussed either slightly
favor Applicant or are neutral.
Accordingly, we find that Opposer has proved its Section 2(d) claim by a
preponderance of the evidence.
IV. Dilution Claim
Turning finally to Opposer's claim of dilution, an essential element for
proving dilution is proving fame, and fame for dilution purposes requires a more
stringent showing than fame for likelihood of confusion purposes. Palm Bay
Imps., Inc., 73 USPQ2d at 1694; and ProMark Brands Inc. v. GFA Brands, Inc.,
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114 USPQ2d 1232, 1250 (TTAB 2015) (“Where, as here, a mark is not proven
famous for purposes of likelihood of confusion, it will certainly not meet the
higher threshold for fame required to prove dilution.”).
Because, as discussed above, Opposer has not shown on this record that its
DIESEL mark has achieved fame for purposes of likelihood of confusion, it
follows that Opposer has not shown the requisite level of fame for purposes of
dilution. Therefore, Opposer has failed to prove its dilution claim by a
preponderance of the evidence.

Decision: The opposition is sustained and registration of Applicant’s mark
is refused under Section 2(d) of the Trademark Act. Opposer’s dilution claim is
dismissed.